I was curious/shocked when I first read Jason's post last month that Wiley was demanding attribution for use of the FOR DUMMIES mark. 

Martin Schwimmer said it's not really a demand letter though.  

Wiley's letter is not a demand letter in that it doesn't allege an infringement of rights and doesn't demand cessation of activity. When pressed by Calcanis (CEO of Weblogs (now an AOL company)), Wiley acknowledged that one-time use in a title was not trademark use, and that Wiley was merely asking for attribution. However, the original letter resembles a demand letter in that it starts out with a recitation of legal rights, and asks for written assurance that Weblogs is complying with the request.

On these facts, Weblogs does not have to provide attribution. If you write a letter asking someone to do something they do not have to do, then you are asking them for a favor. When asking for a favor, If you do not use magic words such as 'please', 'thank you' and 'we respectfully request,' then do not be surprised when your letter gets posted on a website.

We know a prefix and/or suffix can be protected based on McDonald's.

The likelihood of confusion is pretty low here, so I would say Wiley's best chance comes under a dilution argument.  The Federal Anti-Dilution Act provides for dilution even when there is no actual confusion or likelihood of confusion, and among the factors we must consider is the strength of the mark.

Efforts in policing third-party use is useful for two reasons here: it reinforces the strength of the mark and is a factor in preventing a mark from becoming generic.


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